The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand (or “Michelin”), France, represented by Dreyfus & associés.
The Respondent is Thomas Panagiotopoulos of Abbotsford, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains Pty Ltd. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. The Center received email communications from Ms. S. Simonis on May 8 and May 9, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on May 10, 2013.
The Center appointed Derek M. Minus as the sole panelist in this matter on May 17, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a worldwide company based in France that is active in automobile and tyre manufacturing as well as the publication of hotel and restaurant guides and maps. The Complainant has marketing operations in more than 170 countries and employs 115,000 employees worldwide.
The Michelin brand had been present in Australia for over fifty years and in October 1997, the Complainant established an Australian company, Michelin Pty Ltd, to manage and develop its business in Australia, New Zealand and the Pacific Islands. Michelin has a large, professional tyre sales and service business in Australia, with more than 800 retailers for passenger car and light truck tyres and over 300 retailers for truck and bus tyres.
The Complainant owns the trademark MICHELIN, which is protected in many countries around the world, and in particular in Australia. It also owns various domain names incorporating the trademark MICHELIN, which it uses to promote its services and products including registered on December 1, 1993 and . In Australia, the Complainant is the registered proprietor of the following trade marks:
Registration number: Trade mark: Priority date: Goods:
258104
MICHELIN
May 1, 1972
Class 12: pneumatic tyres
847441
MICHELIN
August 23, 2000
Class 9, 16, 37, 41
879562
MICHELIN
June 18, 2001
Classes 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42 5. Parties’ Contentions A. Complainant
The Complainant and its MICHELIN trademark enjoy a worldwide reputation in the automotive industry and in French gastronomy. The Complainant owns numerous MICHELIN trademark registrations across the world and in particular in Australia where the Respondent is located.
The term MICHELIN is unique and is only known in relation to the Complainant. It has no meaning in English or in any other language, except in connexion with the Complainant. Consequently, the MICHELIN mark has a high degree of distinctiveness.
The Complainant has used the MICHELIN trade mark in connection with a wide variety of products and services in Australia and around the world. It is implausible that the Respondent was unaware of the Complainant’s mark when he registered the disputed domain name on June 9, 2012.
The Respondent is not known by the disputed domain name nor affiliated with the Complainant in any way. The Respondent’s use of the MICHELIN trade mark in its entirety, combined with a generic term related to the Complainant’s activity, clearly proves that the Respondent was aware of the existence of the Complainant's MICHELIN mark. The Respondent cannot claim any actual or contemplated bona fide or legitimate interest in the disputed domain name as it was obviously adopted in order to create a confusion in the mind of consumers by leading them to believe that the online store to which the disputed domain name resolves, is affiliated or endorsed by Complainant.
Bad faith in the registration or use of a domain name is demonstrated when a well-known trade mark is used by someone with no connection to the trade mark name.
The Respondent never responded to the cease-and-desist letters sent by the Complainant despite several reminders. This lack of response suggests that the Respondent lacked any right or legitimate interest in the disputed domain name. B. Respondent
The Respondent did not file any substantive response in relation to this complaint. However, on May 8, 2013 a Sophie Simonis wrote to the Center claiming that a copy of the notice was not received at either of the email addresses but “confirmed that the letter was received … at his home address via courier”. The email also claimed that the Respondent should have until May 13, 2013 to provide a response.
The following day, after receiving an email from the Center requesting clarification, Sophie Simmons again wrote to advise that she was authorised by Mr Panagiotopoulos to reply on his behalf and that, “the respondent will provide you with a response by May 16, 2013 that can be presented to the panel”.
No response from the Respondent was ever received nor was any application made for additional time to complete the response. 6. Discussion and Findings
The issue to be determined in this Complaint is whether the registration of the disputed domain name by the Respondent constitutes a breach of the auDRP such that the domain name should be transferred to the Complainant.
The purpose of an administrative process conducted under the auDRP is stated in clause 1. 2 of the Policy:
“… to provide a cheaper, speedier alternative to litigation for the resolution of disputes between the registrant of a .au domain name and a party with competing rights in the domain name”.
The auDRP is contained in Schedule A, clause 4(a) of which requires a complainant to prove, on the balance of probability, each of the following matters:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
It is important to note, as set out in clause 1. 4 of the auDRP:
Some parts of the auDRP are substantively different from the UDRP. Prospective complainants should not assume that principles derived from UDRP decisions will be applicable to auDRP disputes. However, to the extent that the UDRP and the auDRP overlap in principle, the Panel will refer to UDRP jurisprudence in this Decision. A. Identical or Confusingly Similar
The Panel accepts the evidence of the Complainant that that the MICHELIN mark has acquired widespread fame and reputation around the world and is a well-known and famous mark, as had also been found by previous UDRP panels. See Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above. com Domain Privacy,WIPO Case No. D2012-0045.
The disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN as it reproduces the Complainant’s trade mark in its entirety. It has been consistently held in numerous UDRP decisions that a domain name is generally considered as identical or confusingly similar to a complainant’s trademark “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
The mere addition of the generic word “star” does not diminish the confusing similarity between the disputed domain name and the Complainant's trade mark. On the contrary it evokes the “Michelin star” rating system for which the company is famous through the publication of its gastronomy guidebooks. The addition of “.com. au” at the end of the disputed domain name offers no substantive, meaningful or material change to the domain name to differentiate it from the trade marks owned by the Complainant.
Therefore the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered MICHELIN trade mark. B. Rights or Legitimate Interests
The second element that a complainant under the Policy must show is that, on the balance of probability, the respondent has no rights or legitimate interests in the disputed domain name . If a complainant shows that prima facie the respondent has no rights or legitimate interests, the onus then reverts to the respondent to displace that presumption.
Paragraph 4(c) of the Policy states that, in responding to a complaint, rights to and legitimate interest in a domain name may be demonstrated by a Respondent evidencing one of the following, non-exhaustive, situations:
(iv) before any notice of the subject matter of the dispute, bona fide use, or demonstrable preparations were made to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names acquired for the purpose of selling, renting or otherwise transferring); or
(v) it as an individual, business, or other organisation) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(vi) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue
The Complainant’s evidence establishes that the Respondent is not affiliated with the Complainant and has no licence or authorisation to use the Complainant’s MICHELIN mark or any domain name incorporating it. The Respondent has no prior rights or legitimate interest in the domain name as the registration of the MICHELIN trade marks preceded the registration of the disputed domain name by many years. Also, the Respondent is not commonly known by the name MICHELIN as a WhoIs database search identifies the registrant as a Thomas Panagiotopoulos.
The disputed domain name has not been locked and still resolves to a web site headed, “Michelin Star Produce” which appears to be an online commercial store selling food products. However, when the Complainant attempted to order products from the website it found that its orders were never confirmed by email. This and other failings noted by the Complainant, indicates that the website is not functional. The Respondent has made use of the disputed domain name before notice of this dispute, and in connection with an offering of goods or services. But under paragraph 4(c)(i) of the Policy “it is the use of the domain name that must be bona fide, not the offering of goods or services.” (Final Report of the auDA Dispute Resolution Working Group, June 2001, Note 13. See Swinburne University of Technology v. Swinner a/k/a Benjamin Robert Goodfellow,WIPO Case No. DAU2004-0003).
The Respondent cannot claim any actual or contemplated bona fide or legitimate interest in the disputed domain name as it appears that it adopted the disputed domain name to create a confusion in the mind of consumers to believe either that the Respondent directly received a “Michelin Star” or that its products are related to, affiliated to, sponsored by, or endorsed by the Complainant. It has been noted by previous auDRP panels that “it does not matter that an Internet user, on visiting the Respondent’s website, might become aware that the website is not that of the Complainant’s. The confusion arises by a simple comparison between the Complainant's trademarks and the Disputed Domain Name” see Aastra Telecom Inc. v. Spring Mountain Enterprise Ply Ltd.,WIPO Case No. DAU2008-003 and GM Holden Ltd v. Blogger Pty Ltd.,WIPO Case No. DAU2008-0016.
The Respondent has not submitted a response to the Complaint, so there is no evidence to rebut the Complainant’s contentions or demonstrate that the Respondent has some right or legitimate interest in the disputed domain name. See Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323; and Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (finding that the respondent's default alone was sufficient to conclude that it had no right or legitimate interest in the domain name).
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP on which it is based, the auDRP does not require a complainant to prove both that the disputed domain name has been registered and used in bad faith. Proof of either limb is sufficient to satisfy the requirements of Schedule A, paragraph 4(a)(iii).
Any of the circumstances described at paragraph 4(b) of the Policy, if proved, will be evidence of bad faith registration and use. Paragraph 4(b) of Schedule A deems the following, non-exhaustively, to be evidence of registration or use in bad faith:
(vii) circumstances indicating that the domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, or
(viii) the domain name has been registered in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name, or
(ix) the domain name has been registered primarily for the purpose of disrupting the business or activities of another person; or
(x) the domain name has been used to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The current auDA, Guidelines for Accredited Registrars on the Interpretation of Policy Rules for Open 2LDs (Policy No. 2008-06) provides guidance on the process by which domain name licenses are granted in the .au space. Clause 2. 1 of these Guidelines provides that the Policy Rules for the open 2LDs are divided into two types of criteria:
a) Eligibility - is the registrant eligible to license a domain name in the requested 2LD?
b) Allocation - can the requested domain name be allocated to the registrant?
The eligibility and allocation criteria apply for all of the open 2LDs. The Eligibility rule requires the registrant to provide relevant identification details for the 2LD in which they want to license their domain name. The Allocation rule requires the registrant to give a reason why the requested domain name can be allocated to them. The reasons available in each 2LD are where the domain name is:
a) an exact match of the registrant's name; or
b) an abbreviation or acronym of registrant's name; or
c) indicative of a close and substantial connection to the registrant.
In the footer of the Respondent’s website, it states, “MSP [presumably Michelin Star Produce] is a registered Trademark of TP Ent”. A search conducted on ATMOSS, the Australian Trade Mark On-line Search System does not identify that any such trade mark is in existence. Further, a search of the Australian Securities and Investments Commission (ASIC), Business Names and Organization Index does not find that any such company currently exists.
The disputed domain name is then, contrary to the auDA allocation requirements, not an exact match of the registrant’s name, nor an abbreviation or acronym of the registrant’s name. As the Respondent has failed to provide a response, there is also no evidence of any close and substantial connection between the registrant and the disputed domain name.
That being the case, the Panel accepts the Complainant’s contention that the Respondent was perfectly aware of the Complainant and its MICHELIN trade mark at the time of its registration of the disputed domain name. The word “star” associated in the disputed domain name with the MICHELIN trade mark, is clearly a direct reference to the Michelin star rating system, which is well known in the culinary world.
The clear implication is that the Respondent has adopted the Michelin name and rating system in its disputed domain name as well as its unregistered business name in order to create a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of its website and the food and grocery products it is apparently attempting to merchandise.
The Panel accepts the Complainant’s contentions that the disputed domain name was registered in bad faith within the meaning of paragraph 4(a)(iii) of the Policy, which alone is sufficient to establish that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Derek M. Minus
Sole Panelist
Date: May 31, 2013
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